Patent Infringement Analysis Varies Based on Statutory Claim Type

Article co-written by Yuri Levin-Schwartz, Ph.D., a law clerk at MBHB.

Patent claims serve to provide notice as to the scope of an invention described in a patent. The claims can be directed to various statutory types, such as an apparatus, article, composition, method, system, or any other patentable subject matter. For example, when the invention is a mechanical device, the claims are generally characterized as apparatus- or system-type claims, and detecting infringement of such claims can be as simple as finding a similar physical device in the market. In contrast, software-related inventions can be claimed as a method, as a system that carries out software operations, or as a computer-readable medium (CRM) that contains program instructions, each of which may be infringed in different contexts. Detecting infringement of software-related patents can be more cumbersome because such inventions can be collectively executed by several distinct components or produce outputs that are not visually apparent. This article focuses on different standards for infringement of software patents based on whether the patent has method, system, or CRM claims, and explains the practical implications of these differences.

Under 35 U.S.C. § 271(a), a party infringes a patent when it, without authority, makes, uses, offers to sell, sells, or imports the patented invention within the United States.[1] The Federal Circuit has found that “[n]ot only will the [infringement] analysis differ for different types of infringing acts, it will also differ as the result of differences between different types of claims.”[2] Accordingly, software patents are often subject to multifaceted infringement analyses during litigation. For example, in NTP, Inc. v. Research In Motion, Ltd., the Federal Circuit performed discrete infringement analyses for method and system claims directed to a software invention.[3] These different standards for infringement of software claims should influence the way a software-related patent is drafted.

Method Claims

In NTP, the Federal Circuit evaluated whether a method for integrating an electronic mail system with RF communication networks was infringed under the “use” category of § 271.[4] Use of RIM’s e-mail system for BlackBerry devices, which incorporated a relay located in Canada to route e-mails to the recipient, allegedly infringed the asserted method claims.[5] RIM argued that, because a portion of the method was performed by the relay located in Canada, the method was not “used” within the United States.[6] The Federal Circuit agreed, stating that “[b]ecause a process is nothing more than the sequence of actions of which it is comprised, the use of a process necessarily involves doing or performing each of the steps recited. This is unlike use of a system as a whole, in which the components are used collectively, not individually.”[7] Accordingly, the Federal Circuit held that RIM did not infringe the method claims.[8] Since NTP, the Federal Circuit has confirmed the reasoning that each step of a method claim of a U.S. patent must be performed within the United States to be infringed.[9]

In performing its analysis, the court noted that Congress has expressed the view that method claims can only be infringed under the “use” category of infringement, and held that RIM had not sold, offered for sale, or imported the entirety of the method.[10] However, the court made sure to leave open the possibility that a method might be infringed under other categories of infringement outlined in 35 U.S.C. § 271(a) (e.g., making, offering to sell, importing) or under different factual circumstances.[11]

In view of these considerations, patent practitioners should strive to draft method claims for software inventions from a perspective of a single device or component in a system. This device or component would ideally be that which is most likely to be located in the United States. In many cases this will be an end-user device. For example, in NTP the method claims would have been infringed if each step of the claimed process had been performed on a BlackBerry. However, in other instances, a patentable idea for a software invention necessarily involves interactions of multiple components in a system. In these instances, a patent practitioner should focus on a central component of a corresponding system that produces the useful output.

Software-related patents that claim a method should also provide a description of the steps performed in the method, such as by referring to a block diagram. The block diagram allows the practitioner to provide a tangible representation of the functions performed by the claimed software. A description of the block diagram should make it clear which components of a system can perform each step. In ideal scenarios for purposes of drafting software method claims, the practitioner can identify a single component that is capable of performing each step, while still describing embodiments where different steps can be performed by different components.

System Claims

Though the Federal Circuit found that the method claims were not infringed in NTP, the court reached a different result with regard to the asserted system claims. RIM argued that the foreign relay was necessary for other components of the system to function properly, and so any “use” of the system as a whole would not be in the United States.[12] But the court relied on controlling precedent to contradict this reasoning. The court found that the situs of a system is not the place where the entire system resides, but is rather “the place where control of the system is exercised and beneficial use of the system is obtained.”[13] Thus, because BlackBerry owners used their devices to send and receive e-mails within the United States, the system was used within the United States for purposes of § 271. So, unlike method claims, which must be performed in their entirety in the United States to be “used,” system claims of a U.S. patent may still be infringed where one or more components exist outside the boundaries of the United States.

Accordingly, it is less critical for system claims to recite a single component capable of performing each function of a software program. But the result in NTP does not imply that software-related system claims should be drafted carelessly. Such claims should focus on the components where a useful result is obtained. If, for example, the Federal Circuit had been convinced that the beneficial use of the claimed system was achieved by the foreign relay, it is unlikely that the system claims would have been found infringed.

Thus, as with method claims, it is worthwhile for practitioners to describe one or more block diagrams of software-related system components. This allows an opportunity to describe which components perform essential functions of the claimed software. In addition, such a description will often serve as a precursor to a block diagram for a method claim, and can include a memory and one or more processors that can execute software instructions stored on the memory to perform the method. By describing the system in this way, a practitioner can tie the system and method claims together, and clarify which components perform which functions. For example, a central component to the system may dictate the steps performed in the method, perhaps because that component performs steps that are patentably distinct from other software inventions.

Computer-Readable Medium Claims

CRM claims combine the functionality of method claims with the tangibility of apparatus claims: they recite operations typically provided in a method while being directed to a physical memory having instructions that are executable to cause such operations. Accordingly, whereas it is uncertain whether a method can be “sold,” “offered for sale,” or “imported” for purposes of infringement under § 271, the Federal Circuit has held that CRMs can be. For example, in Finjan v. Secure Computing Corp., the Federal Circuit affirmed that the defendant infringed the plaintiff’s CRM claims because the defendant had “sold” an infringing software product.[14] And while each step of a method must actually be performed in the United States to be infringed, the court in Finjan did not require that the instructions stored in the infringing CRM actually be executed. The court reasoned that, “to infringe a claim that recites capability and not actual operation, an accused device ‘need only be capable of operating’ in the described mode.”[15] Thus, CRM claims can operate like apparatus claims for purposes of an infringement analysis.

Accordingly, CRM claims are highly valuable in a software patent infringement context. A claimed CRM might ultimately be a memory installed in an end-user device, which provides further incentive to claim the method from the perspective of a single component. Where a claimed CRM is installed on an end-user device, the CRM claim has been infringed, even where the end-user device has never been used.

Because patent applicants are allowed three independent claims before paying a fee,[16] practitioners drafting a software-related patent should craft claim sets that cover independent method, system, and CRM claims directed to the same invention to take advantage of the different standards of infringement. The method and system claims can be drafted differently based on these infringement considerations. And dependent claims can also be drafted in accordance with these differences in infringement standards. For instance, dependent method claims can be drafted from the perspective of a single component, while claims that depend from an independent system claim might incorporate additional components and functions thereof. Further, though CRM claims will generally mirror the features of a method claim, there is less concern with dependent CRM claims incorporating features related to other components in the corresponding system.

In sum, the varying standards for infringement of software-related patent claims have practical implications that should affect strategy when drafting a patent, particularly when drafting a set of claims. Patent practitioners should be aware of which devices or multi-component systems are likely to infringe a patent, and mold the figures, written description, and claims in a way that allows the standards for infringement to work for, and not against, the client’s needs.

[1] 35 U.S.C. § 271(a).

[2] NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1316 (Fed. Cir. 2005) (citing Minton v. Nat’l Ass’n of Sec. Dealers, Inc., 336 F.3d 1373, 1378 (Fed. Cir. 2003)).

[3] Id. at 1316-24.

[4] Id. at 1317-18.

[5] Id. at 1289-90.

[6] Id. at 1317.

[7] Id. at 1318.

[8] Id.

[9] See, e.g., Meyer Intellectual Properties Ltd. v. Bodum Inc., 690 F.3d 1354 (Fed. Cir. 2012).

[10] NTP, 418 F.3d at 1319.

[11] Id. at 1320-21.

[12] Id. at 1317.

[13] Id. (citing Decca Ltd. v. United States, 544 F.2d 1070, 1083 (1976)); see also Intellectual Ventures I LLC v. Motorola Mobility LLC, 870 F.3d 1320 (Fed. Cir. 2017) (confirming the Federal Circuit’s analysis of system claims in NTP).

[14] Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197 (Fed. Cir. 2010).

[15] Id. at 1204 (quoting Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991)).

[16] See 37 C.F.R. § 1.16(h).


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